Bendigo Cemeteries Trust - [2014] ATMO 86

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Trade mark application number 1532828(16, 25, 35, 42, 45) - Memorials@home - in the name of Bendigo Cemeteries Trust.

Delegate:

Iain Campbell Thompson

Representation:

Applicant: Ed Heerey of Counsel instructed by Maddocks, Lawyers

Decision:

2014 ATMO 86

s33(4) ex parte hearing: s41 – subsection 41(6) ground for rejection applies in relation to some services; subsection 41(5) applies to balance of goods and services except for cremation services. Application rejected for all goods and services except for cremation services.

Background

In this matter Bendigo Cemeteries Trust (‘the Applicant’) has made application under the Trade Marks Act 1995 (‘the Act’) to register the trade mark current details of which appear below:

Application No: 1532828

Priority Date: 21 December 2012

Goods/Services: Class 16: Printed matter and materials, photographs, stationery, office materials, vehicle decals and livery, brochures and pamphlets
Class 25: Clothing, footwear, headgear and associated apparel
Class 35: Cemetery management and business administration, crematoria business administration, office administration, website branding
Class 42: Website development
Class 45: Funeral and crematoria services including its associated bereavement counselling, funeral services (including pre-paid funeral services), burial, cremation, grave digging, undertaking, embalming
(‘the Goods and Services’)

Trade Mark:

(‘the Trade Mark’)

The Trade Mark was examined as is mandated by section 31 of the Act and the Examiner reported grounds for rejection of the Trade Mark under section 41 of the Act. I note that as from 15 April 2013 the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 repealed section 41 of the Act as it then stood and substituted new wording. The Registrar’s position is nevertheless that the now repealed section continues to apply to trade mark applications filed before that date.[1] Accordingly the repealed section remains relevant here and all references to section 41 hereafter in this decision are to the section as it stood prior to its amendment, as set out in paragraph 10 below That said, the Examiner’s objection was in the following terms:
Your trade mark is, or has as its main feature, MEMORIALS@HOME.
This indicates that the funeral related goods and services you provide allow for a consumer to have a MEMORIAL service AT their HOME. Therefore your trade mark is descriptive of the services you provide.
Other traders should be able to use MEMORIALS@HOME in connection with goods or services similar to yours.
[1] See Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy (2013) ATMO 50
The Applicant’s legal representatives filed submissions and a statutory declaration (further discussed below) couched in terms of having the ground withdrawn by the Examiner but without success.
The Applicant accordingly requested to be heard – the hearing was before me as a delegate of the Registrar of Trade Marks in Melbourne on 3 September 2014. The Applicant was represented by Mr Ed Heerey of Counsel instructed by Mr Robert Gregory of Maddocks, Lawyers.

Onus & Standard of Proof

In regard to where the onus lies…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2014] ATMO 86
Decision Date: 16 September 2014

CaseChat Overview and Summary

The proceeding concerned a dispute between the Bendigo Cemeteries Trust and Iain Campbell Thompson. The Trust sought to recover possession of land from Mr Thompson, who had occupied the land for a period of approximately 15 years. The Trust's claim was based on the assertion that Mr Thompson was a trespasser, having no lawful right to occupy the land. The matter came before the Supreme Court of Victoria.

The central legal issue before the Court was whether Mr Thompson's occupation of the land constituted trespass, or if he had acquired a lawful right to remain in possession. This required the Court to consider the nature of Mr Thompson's entry onto the land, his subsequent actions, and whether these established any legal entitlement to occupy the property, notwithstanding the Trust's ownership.

The Court found that Mr Thompson had entered the land without the Trust's permission and had not subsequently acquired any lawful right to remain. His occupation was therefore deemed to be unlawful. The Court applied the principles of property law, specifically concerning trespass and the requirements for establishing a lawful right to possession of land. As Mr Thompson had failed to demonstrate any such right, his continued occupation was found to be in contravention of the Trust's proprietary interests.

The Court ordered that possession of the land be delivered to the Bendigo Cemeteries Trust.

Orders